Establishment of Box CONVERSION
Effective immediately, the USPTO has established Box CONVERSION
as a new Special Box for utility patent applicants who wish to file a
conversion request under either 37 CFR 1.53(c)(2) or 37 CFR 1.53(c)(3).
Applicants who wish to file a conversion request under either
1.53(c)(2) or 1.53(c)(3) by mail should designate Box CONVERSION as
part of the USPTO address.
A utility patent application filed as a nonprovisional
application under 1.53(b) may be converted to a provisional
application under 1.53(c) provided a grantable request under
1.53(c)(2) is filed prior to the earliest of: (1) abandonment of the
nonprovisional application; (2) payment of the issue fee on the
nonprovisional application; (3) the expiration of twelve months after
the filing date of the nonprovisional application; or (4) the filing of
a request for a statutory invention registration in the nonprovisional
application. Conversely, a utility patent application filed as a
provisional application under 1.53(c) may be converted to a
nonprovisional application under 1.53(b) provided a grantable
request under 1.53(c)(3) is filed prior to the earliest of: (1)
abandonment of the provisional application; or (2) the expiration of
twelve months after the filing date of the provisional application.
Note that 1.53(c)(3) cautions that converting a provisional
application to a nonprovisional application has an adverse patent term
impact compared to filing a nonprovisional application claiming the
benefit under 35 USC 119(e) to the provisional application.
Previously, conversion requests under 1.53(c)(2) and
1.53(c)(3) were being mailed to the USPTO with inappropriate USPTO
Special Box designations (e.g., "Box Provisional Patent
Application" or "Box PATENT APPLICATION" as part of the USPTO
address). As Box Provisional Patent Application and Box PATENT
APPLICATION are only to be used for new application filings, conversion
requests should not be sent in envelopes designating either of those
two Special Boxes. Designating either one of those two Special Boxes
could result in a delay in processing the conversion request. It is
anticipated that the establishment of BOX CONVERSION, and its proper
use by applicants, will assist the USPTO to more efficiently process
conversion requests under 1.53(c)(2) and 1.53(c)(3).
NOTE: Box CONVERSION should only be used for
mailing conversion requests under either one of 1.53(c)(2) or
1.53(c)(3) to the USPTO. Documents other than conversion requests under
either one of 1.53(c)(2) or 1.53(c)(3) that are placed in an
envelope addressed to Box CONVERSION may be significantly delayed in
reaching their intended destination.
May 14, 2002 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy